“Gucci and Burberry”

• 1. The typical elements of the offences set out in Arts. 473 and 474 of the Criminal Code are structured in accordance with the regulatory framework for crimes that endanger legal assets. Therefore, what is relevant here is the mere act of counterfeiting or altering another person’s trade mark as a harbinger of the placing on the market of goods that are likely to damage public trust or cause confusion, thus harming consumer confidence. There does not need to be actual deception.

• 2. What Art. 474 of the Criminal Code protects, primarily and directly, is not the buyer’s freedom of determination, but the public trust, understood as the public’s reliance on the trade marks and distinctive signs that identify intellectual works and industrial products, and guarantee their circulation, at the same time as protecting the trade mark owner.

• 3. For the purposes of the offences under Arts. 473 and 474 of the Criminal Code, a trade mark is considered to be counterfeit when confusion with a similar distinctive sign arises, not analytically, solely through the detailed examination and separate evaluation of each individual element, but globally and synthetically, that is, in respect of all salient elements, whether graphic, phonetic or visual.

• 4. In the case of a “strong” trade mark, any variations, even if significant and original, that leave intact the essential identity of the ideological core in which the distinctive nature is encapsulated are also unlawful.

• 5. For the offence of trading in goods with false signs to exist, it is sufficient, and essential, that the falsification is likely to cause confusion, not only at the time of purchase, but also upon subsequent use of the goods.

• 6. It is irrelevant whether the trade mark, if well-known, is registered or not, as use without due cause of a trade mark identical or similar to another “earlier, well-known” trade mark for both homogenous/identical or similar goods or services is unlawful when the former trade mark derives undue advantage from the distinctive character or reputation of the latter.

• 7. How long-standing and extensive the reputation of the well-known mark is determines the scope of application of the offences laid down in Arts. 473 and 474 of the Criminal Code.

• 8. The counterfeiting of famous trade marks, even when affixed to goods belonging to a different market sector from the traditional one, does indeed constitute an offence in accordance with Arts. 473 and 474 of the Criminal Code. This is true even if the counterfeit trade mark is used in different contexts, as a result of the effect of “merchandising” activity that does not otherwise, in itself, constitute grounds for suspicion (here: the slavish reproduction of the “Burberry check” design in fabric ribbons intended for favours for ceremonies [bomboniere]).